The Requirement for an Invention in Patent Law

Justine Pila

Provides comprehensive analysis of one of the most complex and neglected concepts of contemporary patent law, making this a unique research tool for academics and practitioners.

Explores all the central areas of legal controversy in their doctrinal and historical contexts

Draws new connections between European and international law, facilitating a contextual and trans-regional understanding of an issue traditionally dealt with at the domestic and regional levels

Written by a well-respected academic of intellectual property law

Text includes extensive case-law referencing

Contains detailed analysis of unpublished EPC materials

The Requirement for an Invention in Patent Law

Justine Pila

Description

The Requirement for an Invention in Patent Law provides a critical analysis of legal conceptions of the invention in UK patent law and under the European Patent Convention. Dr Justine Pila brings to this text her extensive experience in intellectual property law.

A central theme of the book is that the requirement for an invention, properly construed, sets the boundaries of the patent system in two ways. The first is by defining the categories of subject matters capable of supporting a patent, and the second is by restricting the protection conferred by a patent to individual subject matters conceived qua inventions. In serving these functions, the requirement for an invention helps to fulfil the public benefit objectives of the patent system by mediating
the balance struck by patents between individual patentees and the public.

This book offers an analysis of legal conceptions of the invention in UK patent law and their development from before the first patent legislation of 1623 through the patent system's recent phase of Europeanization. It includes a detailed study of the contemporary (EPC) requirement for an invention and its construction by the European Patent Office, and an analysis of the legal and policy issues which that construction raises. It also places the UK and EPC law in its interpretive context, including its international statutory context, and offers a detailed account of international law-making in the field of patents.

The Requirement for an Invention in Patent Law is an indispensible reference
text for students and academics of intellectual property law in general and contemporary patent law in particular, and will appeal to anyone interested in Europeanization, international patent law and harmonization, and the history of the UK patent system. Its elucidation of this complex area also makes it an excellent guide for practitioners.

The Requirement for an Invention in Patent Law

Justine Pila

Table of Contents

Introduction The Requirement for an Invention and Concept of Inherent PatentabilityThe Term 'Invention'The Origins of the Contemporary (EPC) Definition of 'Invention'The Uncertainty and Controversy Surrounding the Requirement for an InventionThe Need for a Conception and Epistemology of the InventionLFormulated in Light of the Purpose of the System, the Meaning of Europeanisation, and Insights from the History and Philosophy of TechnologyPart I: The Requirement for an Invention in Historical Perspective 1. The Origins of the Patent as an Exceptional Monopoly Grant: Pre-1623 IntroductionThe Royal Custom of Rewarding the Introduction of New Trades and DevicesThe Justification of the Custom in Supporting the
Discovery of 'Things Useful for the Public'The Abuse of the Custom and Intervention of the Common LawSection 6 of the Statute of Monopolies: The Common Law Invention in its Original FormConclusion2. Inherent Patentability in the Pre-Modern Era of Mechanical and Chemical Manufacture: 1623 to 1882Introduction1623 to 1794: The Post-Specification Invention as an Idea or Discovery1795 to 1829: The Invention in and after Boulton v Bull1830 to 1851: The (Patentable) Invention as a Mechanically Inventive Subject Matter1852 to 1882: The Basis of Losh v Hague in the Requirement for an 'Invention' the Patenting of which is not 'Generally Inconvenient'Conclusion3. Inherent Patentability in the Modern Era of New Technologies: 1883 to
1977 Introduction1883 to 1959: The Invention as a Manner of New Manufacture, including an Alleged InventionPost-1959: The Invention as a 'Proper Subject of Letters Patent According to the Principles L Developed for Application of s 6 of the Statute of Monopolies' ConclusionPart II: The Requirement for an Invention in the Era of the European Patent Convention 4. The EPC Requirement for an Invention in its Interpretive ContextIntroductionThe EPC Requirement for an Invention in its International and European Statutory ContextThe European Framers' Intent Regarding the Requirement for an InventionThe European Framers' Intent Regarding Chemical Product PatentsOther European Perspectives on Chemical Product Patents: A Question of
Non-DiscriminationThe UK Model of Inherent Patentability at the Time of its EnactmentConclusion5. Articles 52(2) and 52(3) EPC According to the EPOIntroductionDifferent Approaches for Different Categories of Subject Matters: 1977 to 1987Articles 52(2) and 52(3) EPC as a Requirement for Technical Character: 1988 to 1999Inherent Patentability in an Era of Harmonisation: 1999 to PresentConclusion6. Inherent Patentability in UK Law Since the EPCIntroductionDifferent Approaches For Different Categories of Subject Matters: 1977 to 1989Inherent Patentability as a Fact-Specific Enquiry: Computer-Related Subject Matters after Merrill LynchInherent Patentability as a Requirement for a Subject Matter Sufficiently Supported
Qua Invention: Biotechnology after GenentechRevisiting the Computer Programs Exclusion in Light of Harmonisation: 2005 to PresentConclusion

The Requirement for an Invention in Patent Law

Justine Pila

Author Information

Justine Pila, Dr Justine Pila is the University Lecturer in Intellectual Property Law at the University of Oxford, and an Official Fellow and the Senior Law Tutor at St Catherine's College, Oxford.